We
find the new version to be a great improvement upon the existing
MOPOP and the earlier draft version. Many of our concerns with the
earlier version have been addressed.

We
certainly appreciate that the drafting of these guidelines is not an
easy task. With the lack of jurisprudence it is difficult to
determine exactly where one should tread.

The
members of our Information Technology Committee have reviewed the new
version and have prepared recommendations that were approved by IPIC
Council. They are contained in the attached document.

.../2

4

Thank
you to you and your staff for your hard work on revising this
important area of the MOPOP and also for involving us in the process.
Please feel free to contact Mark Schisler or myself at any time
should you have any questions regarding the attached.

Prepared by the Information Technology Committee of IPIC August 5,
2003

16.02

The definition here of "art" appears to be based upon
Lawson and is accordingly, too narrow. More recent and authoritative
decisions use a broader interpretation. In particular, in Shell Oil
Co. v. Commissioner of Patents, the SCC referred to Tennessee Eastman
and stated that:

The Court however affirmed that "art" was a word of very
wide connotation and was not to be confined to new processes or
products or manufacturing techniques but extended as well to new and
innovative methods of applying skill or knowledge provided they
produce effects or results commercially useful to the public ([1982]
2 S.C.R. 536, at 554)

Further, in the SCC Harvard Mouse decision, Bastarche J, for the
majority, stated:

I agree that the definition of invention in the Patent Act is broad.
Because the Act was designed in part to promote innovation, it is
only reasonable to expect the definition of invention to be broad
enough to encompass unforeseen and unanticipated technology. ((2002),
21 C.P.R. (4th) 417 at p. 478, 219 D.R.R. (4th) 577 (S.C.C.))

We view the statement "An art must accomplish some change in the
character or condition of material objects" to be too
restrictive in the light of current case law. Perhaps the Federal
Court interpretation in Progressive Games ((2000) 3 CPR (4th) 517 at
p. 522)) of the Shell Oil definition of art may be more applicable,
namely:

Accordingly, the definition of the term of "art" as
provided by the Supreme Court includes a process that:

(i) is not a disembodied idea but has a method of practical
application; (ii) is a new and innovative method of applying skill or
knowledge; and (iii) has a result or effect that is commercially
useful.

Thus we would
suggest an alternative definition, namely:

(1)

An art includes a process that
has a practical application that applies skill or knowledge, provided
the process is innovative and has a result or effect that is
commercially useful.

S

16.02.01

A period is missing at the end
of the paragraph.

16.03(a)

See
the above comments
on 16.02 regarding "art".

Perhaps "inter alia"
should be in italics..

16.03(c)

A
semi-colon is missing at the end of this point.

16.04(c)

We
suggest that this be revised to read: '

.:

Subject
matter that accomplishes a result solelyby means
of a person's

interpretative
or judgmental reasoning cannot form the basis of a patent.

Or
alternatively;

Subject matter that accomplishes
a result by means of a person's reasoning, in which the, quality or
character of the result may vary
depending upon the
individual skilled in the art performing the process or method,
cannot form the basis of a patent.

There
are many methods that require a person skilled in the, art to
determine a quality or. quantity based on the
interpretation of data. The comparison of two things can be equally
determined by mechanical means such as sensors. Such interpretation
may simply be one step in a sequence of steps. Its presence should
not disqualify patentability.

16.0.4(e)

See the above comments on 16.02
regarding "art". 16,04(f)

We submit that the statement
"Subject. matter comprising new rules for playing games or the
like...is unpatentable", wrongly encompasses all games. The
Progressive
Games decision
and the subsequent dismissal of appeal by the FCA accepted that a
method of

playing
poker with cards would qualify as "art" provided it was
also new and innovative, given the test set out in Shell Oil.
Accordingly, we suggest that the reference to new rules for
playing games should be deleted.

26.01

A computer-implemented invention
may be embodied in firmware rather than software. Thus we suggest
that the last sentence of the first paragraph should end with
"...computer program or computer hardware".

As this section deals with
computer implemented business methods, and is not directed to
business methods that do not involve the use of a computer, we
suggest a change to the second sentence of the third paragraph. The
change being:

Although
the guidelines agreed upon in 1994 have been retained we note that
content has been added. In particular all that follows the first
sentence is new. It is not clear to us if r
the additional
sentences provide any additional value, as they appear to be
redundant.

26.02(1)(a)

Consider
that a process or programmed computer f r solving an exponential
equation

could make a device work faster
use less memo would be patentable. The process or programmed
computer would make use of the equation but with an algorithm used to
solve the equation, not the equation itself.

26.02(1)(b)

This comment seems to indicate
that an invention may be dissected into parts, rather than the whole.
ease law requires the invention to be examined as a whole: The
question to be asked is "does the process involving the pre
solution activity, the solution activity and the post-solution
activity constitute an invention as whole?".

26.02(1)(c)

The use of the term "algorithm"
raises red flags in most jurisdictions. We suggest: c) A computer
program for evaluating the ..." 26.02(2)

As with 26.02(1) content has
been added from the 1994 guidelines and the new content appears to be
redundant.

The use of the term "loaded'
is not entirely accurate as a program may be run without being
"loaded" on a general purpose computer, for example it may
be run in blocks of instructions sent from a remote machine. We
suggest "An executing" instead of "A loaded".

26.02(2)(Example)

This
example mixes the concepts of patentable subject matter and
novelty/obviousness. It is not clear if the example would be
patentable if it was not well known to analyze stereo-chemical
features as suggested in the example. We believe the example is meant
to illustrate that computer software based solely on a known process
would likely be considered obvious. However, the example suggests
that a claim to such an invention would not be patentable because it
is not proper subject matter. This should be clarified. An example to
consider would be that of Lawson, but implemented on a computer. Such
an example could also be referred to in 26.02(4).

26.02(4)

:What is meant by
"hinder in the exercise"? By this do you mean that a
process that is less efficient than the same process conducted by a
human is unpatentable? Perhaps the thought trying to be expressed is
that patents should not prohibit the exercise of professional skill.

Perhaps
this section may be reworded as follows:

4. Processes
involving professional skill replacing the skill that professionals
would normally be expected to exercise, do not belong to the realm of
patentable subject matter. Professional skill may, nonetheless, be
involved in either a particular step of a process or comprise the
entire process as illustrated in parts I) and II).

26.02(4)(I)

The
sentence "Data processing and communication..." doesn't
seem to relate to the earlier

(c) sentences. We suggest it be
deleted. Further, based upon the following citations we would suggest
that this section be reworded to reflect the decision. Perhaps along
the lines of:

Human
intervention is common during the steps of a process. When a human
step is necessary, the examiner must determine whether the step has
been fully integrated within the process and whether the mental step
is predictable and

precise.
If this is the case, such an invention constitutes patentable subject
matter.

Support for the above suggestion
may be found in Re: Application For Patent Containing Claims That
Read On Mental Steps Performed by a Human Operator in Deciding to
Transmit a Signal. (23 C.P.R. (2d) 99 at p. 95):

A mental step which is
judgementalor interpretive (purely mental) is
definitive of a process the result of which depends on the
intelligence and reasoning of the human mind. It seems settled that
it is only this latter type of mental step, which renders a process
unpatentable.

Further
at (p.96):

Therefore a process which
includes a mental
step involving
the ascertaining and sensing facilities is patentable (provided
all other attributes of patentability are present), since the effect
of the mental step is precise and predictable no matter how
skillfully it is performed. On the other hand, a process which
includes a mental
step, the
nature of which is dependent upon the intelligence and reasoning of
the human mind cannot satisfy the requirements of operability since
the effective of the human feedback or response is neither
predictable nor precise whenever the process is worked by its users.

It follows that the specific
questions to be satisfied in this case are (assuming novelty and
unobviousness):

(1) Whether the steps involving
human response are of the type that require subjective interpretive
or judgmental considerations; or whether they are responses that are
clearly defined and precise, and for example, can be performed
otherwise by apparatus; and

(2) Whether there is sufficient
teaching of the human intervention so that the inventive process is
operative when performed by its users.

With regard to the example in
light of the above discussion, we would suggest that an example
supported by case law would be better. One example to consider would
be illustrating a series of computer-based instructions for
performing a task, such as teaching a language or instructing a
trade.

The use of two icons appears to
be an example of correlation or comparison, which could be
predictably handled by a computer or a human.

26.02(4)(II)

The combination of the phrases
"infringe on practices" and "in the public domain"
is puzzling. Here we have the concept of infringement and what is in
the public domain mixed together with what is patentable subject
matter. If the process is in the public domain it is not patentable
as it is not novel.

We are not sure what you mean by
"limitations". The examples refer to processes that make
use of professional skill, how do they impose limitations? Perhaps
you meant that a patented process for a professional skill would mean
that a professional would infringe the patented process? This appears
to be a non sequitur as processes in the public domain would not be
patentable.

26.05

In
general we findthedecisionsinthisarea to be fuzzy andweexpectyoufindthesame

n particular the need for a
software invention to be embodied in some form of media seems
nonsensical. For example in Motorola,
the algorithm
on its own would not be patentable, but yet embodied on ROM, it was
The presence or absence of a physical medium is not the
essence of any software invention, he invention exists and is useful
without reference to its medium. As technology progresses, the media
may be discarded, witness the common use of "carrier waves".
Regardless of the medium the functional structure of the invention
will remain.

26.05.01

/In
the example there are no antecedents for "said samples" or
"the filtered samples".

26.05.02

In the example there are no
antecedents for "said samples" or "the filtered
samples". You may want to change "b) filter" to "b)
a filter'

26.05.03.a

In claim 4, replace "by a
by a" with "by a". Further the use of "code
means" for each feature will confuse the reader and possibly the
court in determining what "code means" to refer to. Perhaps
"sampling means", "digitally filtering means" and
"storing means" may be better.

There is no antecedent for "said
samples", nor "filtered samples". This also
applies to the examples of claims 5 and 6.

26.05.03.c

The
first paragraph ends with:

Claims to data structures are
inoperative unless they have been integrated with a specific program
for imposing a physical organization on the data.

A specific program does not
always impose a physical organization on the data. For example, the
program may read from a database created by another program. Please
consider the following substitution:

Claims to data structures are
inoperative unless they have been integrated with an application
program for use by that program.

Theexample claim 7
does not indicateanintegration but rather that
the information stored in the data structure mayeuseyeapplicationprogram.The
example claim defines the functionality of the data structure, and
simply that it is "used". Data structures

» .

/

are
by nature used by an application program. Is this is what is meant by
"integrated"?

In the preamble you refer to a
"specific program" and in the claim an "application
program". The use of "application program" throughout
may be best.

Finally, it should be noted that
this example does illustrate patentable subject matter. 26.06